Wilson’s Gun Shop dba Wilson Combat v. Dele Church
Claim Number: FA2301002026277
Complainant is Wilson’s Gun Shop dba Wilson Combat (“Complainant”), represented by Will Schmied, USA. Respondent is Dele Church (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wilsoncombatfirearms.com>, registered with Dynadot, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:
Gerald M. Levine, Steven M. Levy, Esq. (chair), and Jeffrey J. Neuman as Panelists.
Complainant submitted a Complaint to Forum electronically on January 4, 2023; Forum received payment on January 4, 2023.
On Jan 4, 2023, Dynadot, LLC confirmed by e-mail to Forum that the <wilsoncombatfirearms.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wilsoncombatfirearms.com. Also on January 5, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2023, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, Forum appointed Gerald M. Levine, Steven M. Levy, Esq. (chair), and Jeffrey J. Neuman as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the trademark WILSON COMBAT in relation to firearms and holsters based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,407,772, registered on Apr. 8, 2008 and Reg. No. 5,558,795, registered on Sep. 11, 2018). It also operates websites at the domain names <wilsoncombat.com> and <shopwilsoncombat.com>. Respondent’s <wilsoncombatfirearms.com> domain name, registered on August 19, 2021, is identical or confusingly similar to Complainant’s mark, incorporating the entire WILSON COMBAT mark, and adding the generic term “firearms” which is descriptive of Complainant’s business and its products. The “.com” generic top-level domain (“gTLD”) is also added to form the disputed domain name.
Respondent lacks rights and legitimate interests in the <wilsoncombatfirearms.com> domain name as it is not in any way an authorized business partner of Complainant, it operates a fraudulent online store that claims to sell Complainant’s products, and the disputed domain name was registered long after Complainant developed trademark rights in its WILSON COMBAT mark.
Respondent registered and uses the <wilsoncombatfirearms.com> domain name in bad faith as it fraudulently operates its website by purporting to have Complainant’s products in stock and ready to ship, however it only allows for the usage of untraceable payment methods such as cryptocurrency. Further, Respondent’s website reuses images of Complainant’s products and descriptive text which appear at other legitimate online locations. Finally, evidence exists that Respondent is the same person who owned and used the <wilsoncombatguns.com> domain name which was ordered to be transferred to Complainant in a prior UDRP proceeding.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant owns rights in the WILSON COMBAT trademark;
- The <wilsoncombatfirearms.com> domain name is confusingly similar to Complainant’s mark despite its addition of the word “firearms” and the “.com” gTLD;
- Respondent’s is not commonly known by the disputed domain name and its operation of a website claiming to sell Complainant’s products but which copies images thereof from third-party sites and only accepts untraceable payment methods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use;
- Respondent’s activities disrupt Complainant’s business and seek commercial gain based on a likelihood of confusion with the WILSON COMBAT mark in bad faith; and
- Respondent has engaged in a pattern of conduct that further supports the above finding of bad faith.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims that it owns rights in the WILSON COMBAT mark through registration with the USPTO. Registration of a mark with a national trademark authority, such as the USPTO, is generally sufficient to demonstrate rights in a mark for purposes of Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 1954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). As Complainant has submitted screenshots from the USPTO website evidencing its registration of the WILSON COMBAT mark, the Panel finds that Complainant has rights in the mark within the meaning of Policy ¶ 4(a)(i).
Additionally, Complainant argues that Respondent’s <wilsoncombatfirearms.com> domain name is identical or confusingly similar to the WILSON COMBAT mark, as the domain name incorporates the mark in its entirety, only differing by the addition of the generic term “guns,” and use of the “.com” gTLD. Such changes may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). In a rather similar case previously filed by Complainant, the domain name <wilsoncombatguns.com> was found to be confusingly similar to the asserted mark as it wholly incorporated Complainant’s mark while adding only the generic term “arms” – a term descriptive of Complainant’s products. Wilson’s Gun Shop dba Wilson Combat v. Paul Harry, FA 1990298 (Forum May. 11, 2022). See also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”) Further, addition of a generic term that relates to a complainant’s line of business can actually enhance confusion. See e.g., PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant’s PADI mark: “the inclusion of the suggestive term ‘vacations’ in the at-issue domain name only adds to any confusion between the domain name and Complainant’s trademark since the term suggests Complainant’s travel related services.”) As the WILSON COMBAT mark is the most prominent feature of the <wilsoncombatfirearms.com> and as the added generic word “firearms” directly relates to Complainant’s field of business, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
With regard to Policy ¶ 4(c)(ii), Complainant asserts that Respondent is not commonly known by the WILSON COMBAT mark and that it is also not authorized to use the mark. Past Panels have considered relevant WHOIS information in their determination of whether a Respondent is commonly known by a disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA 1932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as ‘Robert Chris,’ and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”) Additionally, lack of authorization to use another’s trademark may indicate a lack of rights or legitimate interests in a domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.) Here, the WHOIS information of record, as disclosed by the concerned Registrar, identifies the registrant of the <wilsoncombatfirearms.com> domain name as “Dele Church” and nothing in the evidentiary record indicates that it is known otherwise. Further, Complainant specifically states that “Respondent is not an authorized business partner, distributor, dealer, vendor or other legitimate business entity…” In light of the presented evidence and assertions, and as Respondent has not filed a Response or made any other submission in this case, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that it is also not making a legitimate noncommercial or fair use of the domain name. Rather, it asserts that the <wilsoncombatfirearms.com> domain name resolves to a website that impersonates Complainant or one of its authorized dealers, copies content from other sites, and is fraudulent in its operation. Such activity has been held to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Subway IP LLC v. Hassaan Khan, FA 1987898 (Forum Apr. 11, 2022) (passing off found where “Respondent’s <subwayfranchise.co> website displays Complainant’s trademark as well as copyright notice and other proprietary content lifted from actual SUBWAY franchise promotion webpages at the www.Subway.com site all in furtherance of stealing Complainant’s identity and perpetrating fraud.”) In support of its contentions Complainant provides screenshots of the <wilsoncombatfirearms.com> website in which Respondent purports to offer for sale firearms bearing the WILSON COMBAT mark. In one of these images, the site prominently displays the WILSON COMBAT logo, an image of a firearm purporting to be manufactured by Complainant, and an offer to “Buy Wilson Combat Arms Online: Wilson Combat 1911 Available In Stock”. Another submitted screenshot shows the “Checkout” page of Respondent’s site in which it requests that users input their name, address, phone number, and email address followed by the option to pay via either the Zelle app or “Cryptocurrency (15% off)”. Additional screenshots are provided demonstrating that the images appearing on Respondent’s website are identical to and, Complainant asserts, have been copied from images used by dealers or other legitimate business partners of the Complainant. The Panel concludes that Complainant’s evidence makes out a prima facie case that Respondent is operating a false retail sales website and Respondent has not participated in these proceedings to offer an alternate explanation for its activities. Thus, the Panel finds, upon a preponderance of the evidence before it, that the disputed domain name is not being used for a bona fide offering of goods or services or in a legitimate noncommercial or fair manner under either Policy ¶¶ 4(c)(i) and (iii).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the WILSON COMBAT mark when registering the <wilsoncombatfirearms.com> domain name. Actual knowledge may form a foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support its assertion, Complainant points to a recent decision, Wilson’s Gun Shop dba Wilson Combat v. Paul Harry, FA 1990298 (Forum May 11, 2022). Complainant asserts that the respondent in that case and the current case are the same, as the contents of the resolving sites are nearly identical and, as noted in more detail below, the source code information for both websites identifies its author as “paulharry.” Complainant also submits screenshots of the <wilsoncombatfirearms.com> website which displays the WILSON COMBAT mark and logo as well as images of Complainant’s firearms. The Panel finds that the presented evidence indicates that Respondent had actual knowledge of Complainant’s rights in its mark at the time it registered the <wilsoncombatfirearms.com> domain name.
Next, Complainant states that Respondent is using the <wilsoncombatguns.com> domain name in bad faith by disrupting its business and seeking commercial gain through confusion with the WILSON COMBAT mark. Past Panels have found both bad faith disruption and attraction for commercial gain founded in trademark confusion under Policy ¶¶ 4(b)(iii) and (iv) where a Respondent attempts to pass itself off as a trademark holder and purports to sell the mark owner’s products through an infringing domain name. See Cognizant Technology Solutions U.S. Corporation v. Jonathan Chadwick / cognizanttech, FA 1713983 (Forum Mar. 1, 2017) (“Complainant has also provided evidence that the Domain Name has been used for the purposes of fraud. As such the Domain Name has clearly been registered and used in bad faith for the purposes of causing and taking advantage of confusion on the Internet and causing disruption. As such the Panel holds that Complainant has satisfied the third limb of the Policy under ¶¶ 4 (b)(iii) and (iv).”) See also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the disputed domain name resolves to a website upon which the respondent passes itself off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). As previously noted, Complainant provides screenshots demonstrating Respondent’s attempts to pass itself off as either Complainant or as an authorized WILSON COMBAT dealer and purports to offer firearms for sale under suspicious circumstances including copying images and text from third-party websites and accepting payments, which are asserted to be untraceable, only via the Zelle platform or in the form of cryptocurrency. Respondent has not participated in this case and so it does not provide any alternative explanation for its actions. As Respondent’s activities do, upon a preponderance of the evidence, indicate an illicit passing off scheme, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). This conclusion is consistent with a panel’s finding in a similar dispute initiated by Complainant, as cited above, Wilson’s Gun Shop dba Wilson Combat v. Paul Harry, supra.
Finally, Complainant points out that examination of the source code for the <wilsoncombatguns.com> website indicates that it shares common authorship with the <wilsoncombatguns.com> website that was at issue in the Wilson’s Gun Shop dba Wilson Combat v. Paul Harry case. The Panel considers this to be an assertion that Respondent has engaged in repeated bad faith conduct, i.e., a pattern of conduct under Policy ¶ 4(b)(ii). A complainant may use serial cybersquatting to substantiate an argument of bad faith under this paragraph of the Policy. See Fandango, LLC v. 21562719 Ont Ltd, FA 1464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”) Complainant has submitted screenshots of the HTML code for both websites and they mention “author/paulharry” and “written by … paulharry” respectively. While it is possible that the code from the <wilsoncombatguns.com> may have been copied and used by anyone, the appearance of the “paulharry” name combined with the fact that the content of the <wilsoncombatguns.com> website is very similar but not identical to that of the <wilsoncombatguns.com> site and both domain names having been held at the same Registrar leads the Panel to conclude that it is more likely than not that the present Respondent is responsible for both sites and was most likely also the Respondent in the Wilson’s Gun Shop dba Wilson Combat v. Paul Harry case using a different alias.[i] As such, the Panel finds that Respondent has engaged in a pattern of conduct which further supports its above conclusion that bad faith registration and use are present in this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wilsoncombatfirearms.com> domain name be TRANSFERRED from Respondent to Complainant.
Gerald M. Levine, Steven M. Levy, Esq. (chair), and Jeffrey J. Neuman as Panelists
Dated: February 10, 2023
[i] The Panel notes that the description of Respondent’s website in this and the Wilson’s Gun Shop dba Wilson Combat v. Paul Harry case are very similar to that found in another case brought by Complainant in which the domain name <wilsoncombatarms.com> resolved to “an online store that is deceptively similar to Complainant’s legitimate business website and that fraudulently purports to sell Complainant’s products, while collecting payment in digital currency so as to evade detection or compensation.” Wilson’s Gun Shop dba Wilson Combat v. CEO / Mason Green, FA 1973224 (Forum Dec. 21, 2021). While not asserted by Complainant, the Panel is sympathetic to the strong possibility that Complainant may be chasing a serial cybersquatter who operates similar fraudulent websites under a variety of domain names and aliases.
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